Pawlina Law is a Toronto based firm that focuses on Intellectual Property Law. The Canadian Intellectual Property Office (“CIPO”) is a special operating agency of Innovation, Science and Economic Development Canada which is responsible for administering Trademarks and Patents in Canada. Karol Pawlina is a registered Trademark Agent with CIPO who worked at an Intellectual Property Law firm for 3 years while at law school. By understanding the complex and rigid rules of Patents, Trademarks, Copyrights, and Industrial Designs, we can help you find solutions to your Intellectual Property matters. By assisting you with making informed business decisions and by having things done properly from the outset, we can save you time and money in the long run. We can advise you in a wide range of services, including:
Canadian Trademark Search and Opinions
Not all trademarks are registrable. We can review your potential Trademark application, conduct various searches, and provide a written opinion as to whether your proposed trademark is registrable. By conducting a Trademark search, a better idea if a trademark’s registrability can be obtained. International searches are also available.
Preparing and Filing a Canadian Trademark Application
Filing a Canadian Trademark Application is the first step in acquiring a Trademark Registration. A trademark is a combination of letters, words, sounds or designs that distinguishes one company’s goods or services from those of others in the marketplace. We can prepare and file a Canadian trademark registration application for you. The trademark process is complex. After filing a Trademark application, it is examined by a Trademark Examiner who may have objections as to the way your trademark was filed. We can respond to an office action for you, including amending the application if required, to overcome these objections. Such responses may include arguments to be submitted if significant objections are raised by the examiner including confusion objections based on prior applications. More information can he found here.
Should the Trademark Examiner receive and review your application, and have no objections or any objections they had were overcome by providing a response or amending the application, an Approval Notice will be issued. We will receive and report this Approval Notice to you. Following the issuance of an Approval Notice, your Trademark will be published in one issue of the Canadian Trade-Marks Journal, which is published weekly. If there is no opposition to your application, or if an opposition has been decided in your favour, your trademark will proceed to registration. We will assist you with every step in the process.
Cost for Obtaining a Canadian Trademark Application
The current estimate of obtaining one Trademark registration in Canada is at least CDN$1,290.00 + HST in professional fees plus disbursements which will be a minimum $336.00. Please note the fee will vary depending upon a variety of factors including the complexity of the wares and services applied for; the need to obtain extensions of time, etc. Please do not hesitate to contact us to book a courtesy call.
This estimated cost includes current fees and government disbursements which may change from time to time and without notice. In addition, and as stated above, the estimate provided excludes the costs of an opposition or an expungement proceeding which may be required for an application to proceed to registration. It also excludes administrative filings such as an assignment, or a change of address recordal. Pawlina Law’s hourly rates for Trademark Prosecution are $275.00 per hour + HST.
| CURRENT ESTIMATE FOR ONE TRADEMARK APPLICATION IN CANADA | ||
| Description (Italic steps may not be necessary) | Our Fee | Government Fee |
| Prepare and file one Trademark application and report filing particulars including review of wares and/or services for compliance with the Canadian Wares and Services Manual as at the date of filing | $570.00 | $336.00 for the first class + $102.00 for each additional class |
| Review and report one office action, if any | Hourly Rates Apply | N/A |
| Respond to one office action if any, including amending application if required (such responses may include arguments to be submitted if significant objections are raised by the examiner including confusion objections based on prior applications) | Hourly Rates Apply | N/A |
| Extension of time to respond to office action (one extension permitted if required), if any. Please note a further extension of time to respond to an office action is permitted only based on exceptional circumstances (hourly rates will apply) | $180.00 | N/A |
| Obtaining and filing certified copy of priority application (if required) | $180.00 | $50.00 |
| Reporting approval notice | $240.00 | N/A |
| Reporting advertisement | $240.00 | N/A |
| Reporting certificate of registration | $240.00 | N/A |
| MISCELLANEOUS FEES | ||
| Reminder Fee (if client instructions are not received after the first reminder, 3 business days before the deadline) | $100.00 | |
| Abandoning application on without prejudice basis, sending abandonment notice and closing file | $80.00 | |
Section 45 Trademark Expungement Proceedings
The Canadian Trademarks act allows anyone to request that a trademark registration be removed (expunged) if the owner is unable to show use of the trademark in Canada during the three-year period preceding the date of the section 45 notice, and there are no special circumstances justifying the lack of use. We can assist you with Section 45 expungements and can assist you with defending against them. More information can be found here.
Trademark Opposition Proceedings
An opposition is a proceeding before the Registrar of Trademarks (the Registrar) whereby somebody (the opponent) objects to the registration of a trademark in Canada. Should you wish to oppose a Trademark or need to respond to a opposition proceeding launched against you, we can assist you with every step in the process. More information can be found here.
Trademark Licensing Agreement
Improper licensing can result in Trademark owners losing their Trademark protection. We can prepare a licensing agreement for you to protect the ownership of your trademark. A review of a Licensing Agreement can be completed on a hourly rate.